Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 28 April 2010

The IPKat's friend Mark Houghton, all the way from beautiful Bakewell (home of the eponymous pudding), has been contemplating the recent poston this weblog concerning the new WIPO logo. It was not however the smart new design that caught his eye but rather the text that accompanied it: "The seven curved lines represent the seven elements of IP, as set out in the WIPO Convention: ... * scientific discoveries ...".

This set Mark thinking and he now asks:

"Is there anywhere in the world that actually treats scientific discoveries as IP? I thought (presumably wrongly) that there was an effectively universal exclusion from Patenting and none of the other rights seem to fit the bill … "

Casting back through the distant recesses of an old Kat's memory, Jeremy says has this feeling that back in the early days of WIPO a model law was prepared for developing countries on the protection of scientific discoveries, but he doesn't know whatever happened to it or if any WIPO Member enacted such a law, or what has happened since. Can any of our readers help? If so, please post your information as comments below.

11 comments:

Nuno Pires de Carvalho
said...

Indeed, in the 70s of last century, there was, under the auspices of WIPO, an attempt to establish a treaty concerning scientific discoveries (Treaty on the International Recording of Scientific Discoveries, 1978). Cf. Records of the Diplomatic Conference for the Conclusion of a Treaty on the International Recording of Scientific Discoveries, 1978 (WIPO, Geneva, 1981). The treaty did not aim at the private appropriation of discoveries, but rather at the recognition of scientists (as well as a system of payment of remuneration to discoverers). It does not come as a surprise that the initiative for the adoption of such a treaty – which in the end attracted the adhesion of a few countries only – was of the Soviet Union. The treaty has never entered into force because of lack of a sufficient number of adhesions.

In the days of the Soviet Union the national intellectual property office was called "The Committtee for Inventions and Discoveries" or a similar title. The office granted patents; these were expensive and designed to bring in hard currency from other countries. They also granted "Author's Certificates" at low cost to citizens for their discoveries.

The patent system in the Soviet Union was actually a bizarre one. The system provided for the protection of inventions through two mechanisms: patents and “inventors’ certificates”. Patents granted for national inventions were split into two different sorts of rights – the right to a public reward was granted to the Soviet inventor, through a certificate, and the property rights were granted to the State (see the Soviet Union’s Regulation on Discoveries, Inventions and Rationalization Proposals, approved by Decree 584, of Aug. 2, 1973, Section 23). Given the impossibility of having an operative patent system in a centrally-planned economy, it is not surprising that Soviet inventors almost invariably opted for applying for an “inventors’ certificate” - a legal regime very similar to schemes prevailing in many large private companies that accord prizes to employees. By applying for a certificate, the inventor would be entitled to receive payment from the Government, and the latter would retain the property in the invention. Thus, Soviet patents ultimately became springboards for the Soviet Government to obtain private property rights in market-oriented economies. After three years of the operation of the Regulation, the Soviet Government had filed more than thirty-five thousand patent applications in foreign countries. By contrast, in that same period, no patent application was filed by Soviet inventors in the URSS or abroad. Soviet inventors only applied for certificates. Of course, foreign inventors could not apply for certificates - only for patents, which, as far as foreign owners were concerned, were similar to those granted in western countries. In addition, there was a regime of "rationalization", which corresponded to certificates of recognition and award for improvements and minor incremental inventions made within Soviet enterprises.But please note that all these sorts of titles of industrial property applied to inventions or technical creations, rather than to scientific discoveries. For these, the Soviet Academy of Sciences had some different types of prizes - which the Soviet Union unsuccessfully wished to implement at the multilateral level.

Commercially, the most significant patent office is that of the United States.

The first Patent Act of the U.S. Congress, entitled "An Act to promote the progress of useful Arts", was passed on April 10, 1790. It legislated for the grant of a patent to an inventor fulfilling the appropriate formalities "if they shall deem the invention OR DISCOVERY sufficiently useful and important". Thus from the very earliest days in the US, patents discoveries were considered patentable if useful.

Although Judge Sweet has problems with gene patents, they have, until now, routinely issued.In 1907 a US patent issued for adrenaline. Insulin was patented in 1923. Neither chemical and certainly no gene string occurs naturally in isolation. Nevertheless, they are discoveries rather than inventions.

Article 1 Section 8 of the US constitution gives Congress the power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" (emphasis added). There again, as Professor Joad would have said, it all depends what you mean by "discoveries".

Trevor Cook raises a very interesting issue: what does the term "discoveries" in the US Constitution really means? It should be noted that U.S. statute employs the terms “invention” and “discovery” as if they were synonymous. See Section 101 of the U.S. patent statute (Title 35 of the Federal Code):“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”But there is an objective reason for this ambiguity. The reason is that U.S. patent law is grounded on the text of Section 8, paragraph 8, of the Constitution of the United States, of 1787, which reads: “The Congress shall have Power […]“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; […].”When the Constitution was written, the word “discovery” was used indifferently to designate a scientific discovery or an invention made by a human being. Both the U.S. patent statute of 1790 and the patent statute of 1793 repeated the words “invention” and “discovery” and employed them indistinctively (although from the comparison of Sections 1 and 2 of the statute of 1793 it may appear that the word “discovery” was reserved for processes and methods of uses of machines and products, while the word “invention” referred to products; this same interpretation was given by the United States Supreme Court in Corning v. Burden, 56 U.S. 252 (1853): “A new process is usually the result of discovery; a machine, of invention.” Id. at 267. “The patent of Burden alleges no discovery of a new process, but only that he has invented a machine, and, therefore, correctly states the nature of his invention..” Id. at 269.). The text of the U.S. patent statute that is in force today maintains the anachronism of the U.S. Constitution. Instead of modifying the Constitution so as to replace the word “discovery” with the word “invention,” Congress has opted for adding the latter word to the patent statute, having courts held that, in accordance with the doctrine of products of Nature, scientific discoveries are not patentable. Therefore, at the end of the day, patentable subject matter in the United States is not very different from the practice in other parts of the world. If it were, the United States would not have been able to accept the language used in Article 27.1 of the TRIPS Agreement, which only mentions inventions as subject matter for which patentability is mandatory. However, a question remains (which, I believe, was never scrutinized by U.S. courts: if an interpreter accepts that the statutory reference to discoveries and inventions implies two different legal concepts (thus avoiding redundancy, which is against the good technique of law making), then the patent statute would be in violation of the Constitution, which only refers to discoveries, not inventions. The same double reference to discoveries and inventions could be found in the French patent law of 1791, which was written a few months after the U.S. statute was enacted. The first article of the French statute of 1791 said:“1. Every discovery and new invention in all fields of industry is the property of its inventor; and therefore the law ensures him the full and entire right to enjoy from it [...].”Article 2 of the French statute differentiated between discoveries and inventions: the latter were any means added "to every manufacture that may constitute a new type of improvement.” Thus, discoveries would correspond to independent inventions while inventions were improvements. The text of the French statute of 1791 (which was enacted by a Decree of 30 December of 1790, but ratified on 7 January 1791) can be found in Blanc S.t-Bonnet, Code des Brevets d’Invention, de Perfectionnement et d’Importation, at 13 et seq. (Audin, Paris, 1825).

Nuno Pires de Carvalho, thank you for that last post in particular; I was unaware of the French statute's similar bifurcation of "inventions" and "discoveries" as with the US'; most illuminating. Despite all the Bilski-related 101 discussions going on at the moment, this is not something I've seen discussed anywhere else.

Of course, according to the words of the statutes, discoveries are unpatentable in Europe, but patentable in USA. So there must be major differences in what can be patented? Not a bit - at least, such differences as there are do not result from this mismatch. A (mere) discovery (like Newton's law of gravitation?) is only new knowledge. New knowledge, without more, is unpatentable: you need a new process or thing.

The Britannica article is interesting, but (I suggest) muddled. Its weakness is that it does not ask what the effect of granting 'protection' for a discovery would be. If you try to frame a patent claim for a 'discovery' broadly you will end up with something that is either not novel or is distinguished from something that is novel by a non-technical feature. If your claim avoids this, then you have an invention rather than a discovery. The problem is that the great and good argue as follows:"Discoveries aren't patentable""Your invention is really (just) a discovery""Therefore you aren't entitled to patent protection (even though you have produced something that is new, useful and unobvious)"That logic should be rejected.

What sort of protection was envisaged for scientific discoveries (knowledge as such)? A moral right would be practical - I don't see what else would be. Somewhat similar questions are coming up in respect of protection of traditional knowledge.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!